STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,214,097 to Severinsky et al.
`
`IPR Case No.: IPR2014-00570
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`______________
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`
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`
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`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,214,097 to Severinsky et al.
`
`IPR Case No.: IPR2014-00570
`
`______________
`
`
`
`
`
`
`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`On May 15, 2015 Patent Owner filed its Motion for Observations on the
`
`Cross Examination of Dr. Jeffrey Stein. (“POM,” Paper No. 34). Petitioner
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`respectfully submits the following responses to each of Patent Owner’s
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`observations.
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`I.
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`Observation 1
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`Dr. Stein testified that Anderson’s “hybrid control strategies” apply “to all
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`types of vehicles,” including parallel hybrids. (Stein Tr. 2, Ex. 2008, 8:22-9:3.)
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`This deposition testimony is consistent with paragraph 17 of the Reply
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`Declaration, where Dr. Stein maps Anderson to Paice’s “new” interpretation of
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`Claim 30-- Claim 30 is directed to a parallel hybrid vehicle. (Reply Decl., Ex.
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`1043, ¶ 17.)
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`II. Observation 2
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`Anderson uses the phrase “hybrid strategy” to refer to a broad hybrid control
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`strategy, such as the extreme thermostat mode and the extreme follower mode.
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`(Anderson, Ex. 1006 at 5.) Anderson also uses the phrase “hybrid strategy” to refer
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`to sub-strategies, such as an engine control strategy that “only allows slow [engine]
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`transients.” (Id. at 7.) Anderson’s description of the “Development of a Working
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`Strategy” makes it clear that Anderson’s slow engine transient control strategy is
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`included as a sub-strategy of the broad “working” hybrid strategy: “Emissions
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`characteristics may then be included by slowing down the engine transient
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`1
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`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`response time.” (Id. at 8, emphasis added.)
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`Dr. Stein’s cited deposition testimony relates to the broader strategy: the
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`“whole paper [Anderson] is about coming up with a hybrid strategy” which
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`“involves thinking about the trade-off between different variables, different issues
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`as they relate to the performance of a hybrid vehicle” and in the context of this
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`broad hybrid strategy there is not “one” particular strategy. (Stein Tr. 2, Ex. 2008,
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`17:3-11, emphasis added.) In contrast, Paragraphs 27-28 of Dr. Stein’s Reply
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`Declaration address the problem of transient emissions and apply Anderson’s sub-
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`strategy “that only allows slow [engine] transients” as a solution. Thus Dr. Stein’s
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`cited deposition testimony does not contradict his Reply Declaration, as the
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`deposition testimony refers to the broad strategy and the declaration testimony
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`refers to the sub-strategy.
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`III. Observation 3
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`Like observation 2, Patent Owner’s observation is not relevant because the
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`cited deposition testimony and the paragraphs from Dr. Stein’s Reply Declaration
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`are not inconsistent. At page 30, line 20 – page 33, line 15, Dr. Stein’s testimony
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`relates to the broad “working” hybrid strategy. However, Paragraphs 27-28 of Dr.
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`Stein’s Reply Declaration address the problem of transient emissions and apply
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`Anderson’s sub-strategy “that only allows slow [engine] transients” as a solution.
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`Thus Dr. Stein’s cited deposition testimony does not contradict his Reply
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`2
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`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`Declaration.
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`IV. Observation 4
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`Dr. Stein testified with reference to Anderson’s Figures 5 and 6 that the
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`battery is cycled less in following mode than in thermostat mode and that the
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`engine is cycled more in following mode than in thermostat mode. (Stein Tr. 2, Ex.
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`2008, 29:1-7.) Patent Owner’s observation summarizes Dr. Stein’s statement in
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`Paragraph 65 of his Reply Declaration as follows:
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`This testimony is relevant to paragraphs 64 and 65 of the Reply
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`Declaration of Dr. Stein (Ex. 1043), where Dr. Stein testified that a
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`POSITA would understand that Anderson’s discussion of strain on the
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`LLD in the sentence “[s]ome of this effect can be reduced using a
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`hybrid strategy that only allows slow transients, but this places greater
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`strain on the LLD” becomes more important as one approaches
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`follower mode and less important in thermostat mode.
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`(POM at 3, emphasis added.)
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`However, Patent Owner’s summary of Dr. Stein’s declaration testimony is
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`incorrect because it deletes a portion of the quote regarding the frequency of
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`engine transients in each mode, as shown below:
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`65. A person of ordinary skill in the art would have understood that
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`Anderson’s teaching of allowing only slow engine transients (see e.g.,
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`Anderson, FMC 1006 at 7) becomes more and more important as you
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`approach the follower mode, because in this mode the transients are
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`frequent and unpredictable. They would have understood it would
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`have less benefit as you approach the thermostat mode of the power
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`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`assist series hybrid.
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`(Reply Decl., Ex. 1043, ¶65.)
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`As explained by Dr. Stein in Paragraphs 61-65 of his Reply Declaration,
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`Anderson’s engine control strategy (“hybrid strategy”) that only allows slow
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`engine transients, applies to engine transients – not the whole drive cycle. (Reply
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`Decl., Ex. 1043, ¶61-65.) Since engine transients are infrequent during the
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`operation of a series HEV operating in the thermostat mode, employing the slow
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`engine transients strategy would not cycle the battery much more than it would
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`otherwise, and therefore would not place a greater strain on the battery. (Reply
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`Decl., Ex. 1043, ¶¶63-64.) Thus, a POSA would have understood that Anderson’s
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`slow engine transient control strategy “becomes more and more important as you
`
`approach the follower mode, because in this mode the transients are frequent and
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`unpredictable” and “would have less benefit as you approach the thermostat mode
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`of the power assist series hybrid.” (Reply Decl., Ex. 1043, ¶65.)
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`Dr. Stein’s deposition testimony does not contradict his declaration
`
`testimony, and neither support Patent Owner’s observation that a POSA “would
`
`have understood that the reference to ‘strain on the LLD’ refers to Anderson’s
`
`thermostat mode rather than the follower mode.” (POM at 3.)
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`V. Observation 5
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`Observation 5 mischaracterizes Dr. Stein’s deposition testimony. Patent
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`4
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`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`Owner states that “when asked about the hybrid mode of U.S. Patent No.
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`5,343,970 (“Severinsky,” Ex. 1009) in which a POSITA would apply Anderson’s
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`teachings, Dr. Stein was unable to provide a response.” (POM at 3.) However, Dr.
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`Stein provided many responses to Patent Owner’s line of questioning. (See Stein
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`Tr. 2, Ex. 2008 at 53:6-68:17.) Patent Owner selectively cites to a portion of this
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`line of questioning—where Dr. Stein asked for clarification—to create a
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`misimpression. (Id. at 60:9-61:18.) Further, Patent Owner improperly tries to tie
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`the cited deposition testimony to paragraphs 38-47 of the Reply Declaration of Dr.
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`Stein (Ex. 1043), although Patent Owner was asking Dr. Stein about paragraphs
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`72-79 of the Reply Declaration during this line of questioning. (See e.g., Stein Tr.
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`2, Ex. 2008 at 59:3-8.) Patent Owner’s observation is predicated on an incorrect
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`summary of the deposition testimony.
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`VI. Observation 6
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`For Observation 6, Paice points to a line of deposition questioning on page
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`63, line 17-page 68, line 17, regarding how and when engine modes are switched--
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`which as Dr. Stein points out, is outside of the context of this IPR and hence not
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`contained in Dr. Stein’s Original or Reply Declarations. In this IPR, the
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`Challenged Claims are not directed to mode switching and thus any such questions
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`are outside the scope of this IPR (i.e., not “prepared for the proceeding”), as
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`evidenced by counsel’s relevance objection. (See 37 C.F.R. § 42.51(b)(1)(ii)
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`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`“Cross examination of affidavit testimony prepared for the proceeding is
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`authorized within such time period as the Board may set.”)
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`As the mode selection disclosure of Severinsky ‘970 has no relevance to the
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`claims in dispute, either directly or in the context of a teaching away-type
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`argument, there is nothing inconsistent with Dr. Stein’s testimony that he has not
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`considered the mode selection strategy in Severinsky ‘970 and his ability to proffer
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`an opinion regarding whether the Challenged Claims are obvious.
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`Further, Patent Owner’s line of irrelevant questioning reargues prior issues.
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`(See Reply Decl., at ¶¶5-9.) Observations are not allowed to include arguments,
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`and more importantly, are not “an opportunity to raise new issues, to re-argue
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`issues, or to pursue objections.” PTAB Trial Practice Guide, 77 F.R. 157, 48768
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`§L; IPR2013-00506, Paper 37 at 2.
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`Dated: May 22, 2015
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`Respectfully submitted,
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`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`Attorneys for Petitioner
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`6
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`Case No.: IPR2014-00570
`Attorney Docket No.: FPGP0110IPR1
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`Certificate of Service
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`The undersigned hereby certifies that on May 22, 2015, a complete and
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`entire copy of Petitioners' Response To Patent Owner's Motion For
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`Observations On Cross Examination, was served via electronic mail by serving
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`the correspondence email address of record as follows:
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`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0014IP1@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0014IP1@fr.com;
`
`Riffe@fr.com; Greene@fr.com
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`Respectfully submitted,
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`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`Frank A. Angileri (Reg. No. 36,733)
`Michael D. Cushion (Reg. No. 55,094)
`Andrew B. Turner (Reg. No. 63,121)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`Attorneys for Petitioner
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`7
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